After attracting over a million players to his game, “Warlight,” and with the impending demise of Adobe Flash in 2014, solo indie video game developer Randy Ficker decided it was time to make a sequel. A pragmatist, he began searching for available domain names and titles that would embody the turn-based, strategy game, which is very similar to the board game Risk and playable on Web browsers and mobile platforms. Finally, one emerged: “Warzone.”

“’Warzone’ was the only one for sale,” Ficker, 39, told The Washington Post.

After three years of work, he launched “Warzone” in 2017 and was thrilled by the public’s response, with over 750,000 downloads from the Apple (iOS) and Google (Android) app stores.

Fast forward to 2020. In his email, a Google Alert informed Ficker that video game publishing behemoth Activision was about to release a free-to-play battle royale version of its juggernaut Call of Duty franchise. The name: “Warzone.”

“I didn’t understand the significance of it at first,” Ficker said. “I’ve never had any trademark disputes before. … I’m just a game developer. It didn’t really bother me until I found out they [filed] the trademark for ‘Warzone,’ so I contacted a trademark lawyer.”

Ficker’s decision to seek legal counsel began a complicated legal battle between the independent developer and the multibillion dollar game company over trademark rights to the “Warzone” name. At stake is also a precedent over how larger corporations may obtain trademark rights, even if their target is already in use by another party.

A trademark applies to a word, design, phrase or combination thereof that identifies goods or services as coming from a certain company or source, like McDonalds’ Golden Arches or Kellogg’s Tony The Tiger. Registering a trademark prevents other businesses or individuals from registering the mark and secures nationwide rights for the registrant, as long as they continue using it in business. What complicates the contest between Ficker and Activision is that the party that first applies for rights over a certain mark does not necessarily grant that party the rights. Essentially, registration with the federal government is not required to gain such rights.

Since Ficker had previously used “Warzone” as a title for his game, it gives him the right to use the mark in commerce, as well as a priority claim, according to Kendra Albert, a clinical instituter at the Harvard Law School’s Cyberlaw Clinic.

“Once you start using a mark in commerce, you can start acquiring rights,” Albert said.

The legal determination over rights is more complicated, however. Should Ficker’s case proceed, the court would determine whether consumers are likely to confuse Ficker’s game as being affiliated or made by Activision, whether their title violates Ficker’s common law trademark rights (having used it first), and which party should ultimately have the right to use Warzone as their title. The two parties also have a legal filing with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), should the courts not rule on which party can use the Warzone name.

On June 25, 2020, some three years after Ficker purchased the Warzone.com URL and launched his game, Activision filed an application with the United States Patent and Trademark Office to trademark “Warzone” and “Call of Duty: Warzone.” Ficker filed his application for the trademark on Oct. 30 of last year, along with an opposition to Activision’s claim the following month with the Trademark Trial and Appeal Board, which decides if disputed marks will be registered or removed.

“If they don’t oppose this and Activision gets the trademark, they’re in a situation where Activision can come after them for using the mark,” Albert said, regarding Ficker’s opposition. “It’s hard to argue that indie ‘Warzone’ was acting in bad faith by opposing.”

Ficker’s attorney, Derek A. Newman, later sent a cease-and-desist letter to Activision, and the two parties began trying to settle the case. Ficker said his ask was 0.25% of Call of Duty Warzone’s profits. While Activision has not released any revenue figures specifically around “Warzone,” which monetizes by selling in-game currency that can be used on cosmetics and a seasonal battle pass, the company announced in May that it had been played by 100 million people. Activision countered with an offer of $10,000, according to Ficker, which he rejected.

“I felt their offer was completely unreasonable,” he said. “It was a tiny fraction of what I already spent on lawyers and the warzone.com domain name.”

An Activision spokesperson declined to answer questions from The Post about the lawsuit, but issued a statement via email.

“The defendant named in this suit has baselessly threatened the company,” the statement read. “We do not infringe upon his intellectual property. We are filing this action so the court can reject his frivolous and irresponsible claims.”

Responding to the statement, Ficker said, “I think it’s absurd. If someone else had made a game called ‘Call of Duty,’ I don’t think Activision would call their own lawsuit frivolous and irresponsible. That doesn’t make any sense to me. … I thought we would strike a deal that would at least give me enough money to buy a new domain name.”

Activision, which has a $74.9 billion market cap, claims it has sold 400 million copies across its Call of Duty franchise since 2003, which would make it the most popular first-person shooter franchise in the world and among the best selling video game franchises of all time.

Having failed to come to terms, on April 8, 2021, Activision filed a lawsuit in U.S. District Court asking the court to declare that the corporation has permission to use the Warzone name, that usage does not infringe on Ficker’s rights, that their trademark should be registered, that Ficker’s should not, and that Ficker should be prevented from bringing further claims against the company regarding the Warzone trademark. The filing states Ficker had threatened to seek an injunction to prevent the corporation from using the name. Activision’s filing also asks for the court to force Ficker to pay its attorneys fees and costs.

Ficker acknowledged he never expected to get his initial ask, but said “I figured I needed to ask for something higher than I what I wanted because I expected they’d negotiate down from there.”

“At the very least, I would like to be made whole,” he said. “I spent about $60,000 on the domain name and legal fees, plus three years of my life into this brand and it hurts business to have to change the title.”

Ficker’s “Warzone” monetizes through ads, memberships (of which he says he has more than 80,000) that allow for an ad-free experience, and in-game features, such as cards and settings. The game has grown every year since its launch. Ficker said it grew more than average last year, but he attributes that to the pandemic lockdown, which led to growth across the industry.

Should Activision win, it would likely strike a blow to smaller businesses and individuals without the means for costly legal battles. A ruling for Activation could lead to weakened intellectual property protections for smaller game developers, according to Albert, depending on how specific elements of the case are adjudicated. Bigger companies could be given a stronger legal precedent to use the same title of an existing game, spending capital to market their game to build public awareness. Like first use, public awareness of a product also grants additional legal rights and protections.

“This case is really interesting because there is a doctrine known as reverse confusion, where the senior user of the mark (the one who used it first in commerce) is much smaller than the junior user, who can basically flood the market with information about their use,” Albert said. “People who would never have heard of ‘Warzone,’ the indie game, will have seen a ton of ads for ‘Call of Duty: Warzone.’ … People will think the indie game is associated with Call of Duty.”

Albert said that Activision has an interest in making sure its title does not become a generic term as well, given knockoff games.

The general test for trademark infringement is likelihood of confusion on the part of consumers, regarding whether a product is endorsed or created by the trademark owner. In this case, should the case move forward to trial, a jury would assess if consumers are likely to be confused.

Activision’s filing argues that their Warzone game is distinct from Ficker’s game on several fronts and that consumers are unlikely to confuse one for the other. They point out that their game is a first person shooter, has higher, more realistic production quality, and is marketed as part of the Call of Duty franchise. Their filing also notes that their game is available on consoles, whereas Ficker’s is not, and that several other video games use “Warzone” as part of their title.

“I would be a little worried if Activision wins this one,” Albert said. “Activision has a lot more money than some indie game developer, and oftentimes in trademark litigation, like lots of forms of litigation, it comes down to who can sustain it longer and who has more money.”

To that end, Ficker has set up a GoFundMe page, where he issued a public appeal to help him fund his legal action. To date, over 800 donors have contributed a total of more than $22,500 toward a goal of $50,000.

At such an early stage of the case, with nothing yet decided, Albert said it’s “too soon to tell what the likely consequences would be,” and it is not yet clear whether the judge will allow the case to proceed.

“What Activision wants is for the court to decide who gets the mark and I’m not sure the court will be willing to do that,” Albert said, since it’s not yet clear that the court is the proper venue for the dispute.

Assessing his options, Ficker says he is ready to fight, but ultimately hopes to just be able to continue working on his game.

“If the GoFundMe raises enough to go fight them, I will fight them,” Ficker said, adding that he is looking into other options as well, such as pursuing a contingency-based agreement for legal representation, which would allow him to save upfront fees in exchange for sharing a percentage of any future settlement with his attorney.

“I’m just interested in making sure my business doesn’t get destroyed, since this is my only source of income,” Ficker said. “I want to get back to making video games. That is what I enjoy doing. I hope to work on this game for the rest of my life.”

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